By Kevin E. Noonan --
Rep.
Dana Rohrabacher (R-CA46) has written regarding our discussion of his remarks
regarding H.R. 6621 (see "Congressional Misunderstandings (Apparently) Motivate H.R. 6621"). In his own
words (as sent to us by his Communications Director, Ms. Tara Olivia Setmayer):
Mr. Rohrabacher would like the opportunity to respond to your blog posting today criticizing his opposition to H.R. 6621.
"The information in patent applications has always been held confidential unless the applicant takes action to make it public.
"Pre-GATT applicants expected the information in their applications would remain confidential until a patent was granted. It is my understanding that the PTO has never released any identifying information on any pre-GATT patent application in our nation's history. H.R. 6621 will require the PTO to release identifying information from these applications.
"Current law, under the compromise agreement of the American Inventors Protection Act of 1999, which I supported, establishes that applications "shall be kept in confidence by the Patent and Trademark Office and no information concerning any such application shall be given without authority of the applicant or owner unless necessary to carry out the provisions of an Act of Congress or in such special circumstances as may be determined by the Director." That legislation then detailed other circumstances under which an applicant can allow the publishing of patent application information, such as in the case of an inventor wishing to file internationally.
"Perhaps I was guilty of a rhetorical flourish or two on the House floor, and maybe I used a generalization when I should have been precise, but I believe these facts support my contention that information in patent applications is, and has always been, held confidential unless the applicant takes action to make it public."
We thank the Congressman for contacting us, and admit that Rep. Rohrabacher is correct: "pre-GATT" applications were filed at a time when the U.S. Patent and Trademark Office kept pending U.S. patent applications secret, and publishing information about them will detract from their confidentiality interests, with the deleterious consequences mentioned by the Congressman.
However, it is more than a quibble that the vast majority of applications filed after enactment of the American Inventors' Protection Act (AIPA) are published, and not only that the entire prosecution history is made public post-publication. The Congressman is wrong in asserting that "information in patent applications is, and has always been, held confidential unless the applicant takes action to make it public." Since passage of the AIPA, patent information is public ~18 months after the earliest priority date unless the applicant "take action" to keep it private. That is a policy decision made long ago, in keeping with the belief that harmonizing U.S. and rest-of-the-world patent practice would be generally beneficial and that there was an advantage to encouraging applicants to speed their applications to allowance in light of the disclosure by publication 18 months after filing.
Rep. Rohrabacher obviously understands more about patent law than many of his colleagues, especially those like Rep. Smith who believe applicant culpability is the cause of these delayed patents.
Hard to believe the lack of understanding among our representatives about this issue and how the patent system really works in general. I am not sure which is worse-someone like Rep. Rohrbacher who knows just enough about the system to be dangerous or someone like Rep. Smith who does not appear to have a clue.
Posted by: ScottE | December 21, 2012 at 07:02 AM
ScottE,
Not hard to believe after seeing the AIA (Abominable Inane Act) passed. And both types of knowledge (partial knowledge and complete cluelessness) are trouble.
Posted by: EG | December 21, 2012 at 08:25 AM
From the article;
"Since passage of the AIPA, patent information is public ~18 months after the earliest priority date unless the applicant "take action" to keep it private."
This is correct.
"That is a policy decision made long ago, in keeping with the belief that harmonizing U.S. and rest-of-the-world patent practice would be generally beneficial..."
This is PARTIALLY correct (the compromise agreement is a far bit more nuanced).
"... and that there was an advantage to encouraging applicants to speed their applications to allowance in light of the disclosure by publication 18 months after filing."
This is completely false, as the applicant has no effective control over the speed of the application process to allowance.
Quite in fact, the notion of PTA was SUPPOSED to ensure that the OFFICE held itself accountable for what you attribute to the applicant.
We see how THAT has gone...
Posted by: Skeptical | December 21, 2012 at 12:04 PM
ps
I posted on another thread the deleterious unintended consequences of forced publication and in essence the violation of the traditional Quid Pro Quo, and repeat that portion here for convenience:
With publication prior to grant, the government (and the public) have everything (and everything that will ever possibly come from) the application as filed. The extremely thin Quid provided is under attack from the get go (see current views of the 'evils' of DOE for example), and amendments to initial claims - something that should not be discouraged - are discouraged. Further, the Office has no reason to be in a hurry to examine that which is already taken as Quo. An important stick has been removed from the ability to create an impetus for the Office to examine expeditiously. The move to publish does in fact have a strong correlation to the increase in backlog (each component - unexamined, RCE and appeal queues), the previous trend to put NO into inNOvation, and a push to weaken patent rights under the hooded guise of globalism (which people should keep in mind naturally favors more the large and established titans of industry).
Posted by: Skeptical | December 21, 2012 at 12:07 PM